{ "case_number": "CAC-UDRP-103477", "time_of_filling": "2020-12-22 10:52:34", "domain_names": [ "jcdecaux-uk.com" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "JCDECAUX SA" ], "complainant_representative": "Nameshield (Enora Millocheau)", "respondent": [ "Xander Shaffer" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nSince 1964, the Complainant is the worldwide number one in outdoor advertising. Throughout the world, the Complainant’s success is driven by meeting the needs of local authorities and advertisers by a constant focus on innovation. For more than 50 years the Complainant has been offering solutions that combine urban development and the provision of public services in approximately 80 countries. The Complainant is currently the only group present in the three principal segments of the outdoor advertising market: street furniture, transport advertising, and billboard.\r\n\r\nAll over the world, the digital transformation is gathering pace: the Complainant now has more than 1,061,630 advertising panels in Airports, Rail and Metro Stations, Shopping Malls, on Billboards, and Street Furniture.\r\n\r\nThe Complainant’s Group is listed on the Premier Marché of the Euronext Paris stock exchange and is part of the Euronext 100 index. Employing a total of 13,210 people, the Complainant’s Group is present in more than 80 different countries and 3,890 cities and has generated revenues of €3,890m in 2019.\r\n\r\nThe disputed domain name was registered on 15 December 2020.\r\n\r\nThe Registrar confirmed that the Respondent is the current registrant of the disputed domain name and that the language of the registration agreement is English.\r\n\r\nThe Respondent has not filed a Response.", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\nThe Complainant made the following contentions: \r\n\r\nThe Complainant states that the disputed domain name is confusingly similar to its trademarks and branded services JCDECAUX®.\r\n\r\nThe addition of the geographical abbreviation “UK” (which refers to the United Kingdom, where the Complainant has activities) to the trademark is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark JCDECAUX.\r\n\r\nIt is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP” (for instance WIPO Case No. D2003-0888).\r\n\r\nFurthermore, the Complainant contends that the addition of the gTLD “.COM” does not change the overall impression of the designation as being connected to Complainant’s trademark. It does not prevent the likelihood of confusion between the disputed domain name and Complainant, its trademark, and its domain names associated. The Complainant refers to WIPO Case No. D2006-0451 in which the panel concluded that: “It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.”\r\n\r\nFinally, the Complainant argues that past Panels have confirmed the Complainant rights over the term “JCDECAUX”. For instance: CAC Case No. 102733 ; WIPO Case No. D2019-1143 ; and CAC Case No. 102306 .\r\n\r\nThus, the Complainant concludes that the disputed domain name is confusingly similar to the Complainant's trademark JCDECAUX.\r\n\r\nRegarding Respondent's rights or legitimate interests, the Complainant points to the decision in the WIPO case No. D2003-0455, according to which the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests and once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP.\r\n\r\nThe Complainant asserts that the Respondent is not identified in the WHOIS database as the disputed domain name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name. Thus, the Respondent is not known as the disputed domain name. In support of its arguments, the Complainant refers to Forum Case No. FA 1781783 in which the panel found that the respondent was not commonly known by the disputed domain name under paragraph 4(c)(ii) of the UDRP Policy.\r\n\r\nThe Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and he is not related in any way to its business. The Complainant does not carry out any activity for, nor has any business with the Respondent.\r\n\r\nNeither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark JCDECAUX or apply for registration of the disputed domain name by the Complainant.\r\n\r\nBesides, the Complainant argues that the disputed domain name is identical to the Complainant’s website in the United Kingdom. Therefore, the Complainant contends that the Respondent did not make any use of the disputed domain name since its registration, and it confirms that the Respondent has no demonstrable plan to use the disputed domain name. It demonstrates a lack of legitimate interests in respect of the disputed domain name.\r\n\r\nTherefore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.\r\n\r\nTurning to the bad faith argument, the Complainant asserts that the disputed domain name is confusingly similar to the Complainant's trademark JCDECAUX. The Complainant asserts that its trademark JCDECAUX was already known for decades and protected in several countries at the time of the registration. The Complainant is doing business in more than 80 countries worldwide and is listed at the Euronext Paris stock exchange.\r\n\r\nBesides, the Complainant points to the fact that past panels have held that the JCDECAUX trademark is well-known (see WIPO Case No. DCC2017-0003: “The Panel is satisfied that the Respondent must have been aware of the Complainant's well-known JCDECAUX trademark when it registered the Domain Name.”).\r\n\r\nMoreover, the disputed domain name resolves to a website copying the Complainant’s official website for the United Kingdom.\r\n\r\nThus, given the distinctiveness of the Complainant's trademark and reputation, the Complainant can state that the Respondent has registered the disputed domain name with full knowledge of the Complainant's trademark JCDECAUX, and therefore could not ignore the Complainant.\r\n\r\nFurthermore, the Complainants points out that the disputed domain name is identical to the Complainant’s website in Estonia. Therefore, the Complainant contends that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent or of a product or service on the Respondent’s website.\r\n\r\nOn these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).", "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.", "decision": "Accepted", "panelists": [ "Mgr. Vojtěch Chloupek" ], "date_of_panel_decision": "2021-02-03 00:00:00", "informal_english_translation": "The Complainant submitted evidence that it is the registered owner of the international trademark registration No. 803987 for \"JCDecaux\" (word), registered since 27 November 2001 for classes 6, 9, 11, 19, 20, 35, 37, 38, 39, 41 and 42, which has been designated for numerous countries around the world.\r\n\r\nThe Complainant also provided information, supported by evidence, that it is the registered holder of the domain name which was registered and used since 23 June 1997.", "decision_domains": { "JCDECAUX-UK.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }